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Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topics 2 and 3, relating to the initial processing of applications

Attention: Fred A. Silverberg

 

 

TOPIC 2

Assuming the PTO's statement of the problem accurately reflects its situation (with respect to burden and expense), we have no objection to the PTO modifying its fee structure to properly reflect the burdens it faces. This is especially true because our practice involves the charging of a deposit account for newly filed applications, so we likely would face only a single fee (for missing oath/declaration) anyway.

One question we do have is whether provision would be made for those

situations where the PTO is authorized by the application transmittal letter to charge a deposit account and that account is found (temporarily) to have a shortage of funds. Imposing a separate Rule 19(h) fee in this type of circumstance seems a bit extreme, especially if the situation can be remedied with a simple phone call to the deposit account contact person.

TOPIC 3

In addition to removing all of the benefits gained when Rule 53 was amended last December, the changes proposed in this topic appear to have the potential to cause far more problems than they will solve.

First, the benefits of amended of Rule 53 would be lost by requiring

the type of analysis and statement mentioned at 63 Fed. Reg. 53503. These requirements are so burdensome (and must be done so soon after the filing of the application) that practitioners likely will opt to just perform an inventorship determination, no matter how thorny the issues involved might be. The previous changes to Rule 53 aided practitioners in that complicated and difficult decisions and issues could be worked out over time. The burdens the PTO now wishes to impose would completely reverse those positive gains.

Second, the requirement that a continuing application be filed to "correct" an improper "1-month good try" submission raises some interesting and tough issues. For example, suppose that practitioner Jones, representing Company X, submits an application in which no inventors are named. Within one month of the filing date, Jones submits the information mentioned at 63 Fed. Reg. 53503 and lists A, B, and C from Company X and D from Company Y as probable inventors. Prosecution proceeds and Jones continues with her inventorship determination, likely in conjunction with an attorney representing Company Y. The examiner determines the application contains allowable subject matter and mails a Notice of Allowability which includes a period to submit an oath/declaration. Jones finally determines that proper inventorship of the allowed claims lies with A, B, and D, and a declaration reflecting this is submitted to the PTO. The examiner refuses entry of the declaration and requires that a continuing application be filed for entry of the declaration.

What does Jones do? How can she file a continuing application in which she claims priority to an incomplete application, i.e., one in which no oath/declaration was ever submitted? Does the PTO - perhaps by administrative fiat - declare that the first application was "complete" for purposes of claiming priority? If not, how does Jones avoid on sale, public use, etc., statutory bars for the second application which has only its filing date as a priority date?

The PTO should continue to refuse to examine applications until an oath/declaration setting inventorship has been filed.

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

 

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topic 4, relating to the number of claims

Attention: Robert W. Bahr

 

 

The discussion in the Federal Register does not provide a breakdown of art units in which applications containing numerous claims are filed. We suspect that such applications are concentrated in a few art classes and do not present a widespread problem within the PTO.

Although our practice rarely involves the filing of an application with more than 30 claims, such instances are not unknown. We continue to believe that, on such rare occasions, the additional per-claim (above 20) fee imposed is sufficient to cover the PTO's extra burden, especially in view of the fact that the vast majority of prosecution focuses on the independent claims.

The proposal to limit independent claims examined to six is disingenuous, especially as it relates to chemical inventions. For years now, the PTO has misused restriction practice so as to impose a de facto limit. If the PTO would agree to follow its own rules regarding distinct and independent claims (see Chapter 800 of the MPEP), we would reconsider our objection to the PTO imposing a cap on independent claims.

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

 

 

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topics 9 and 10, relating to the submission of information disclosure

statements

Attention: Kenneth M. Schor

 

 

INTRODUCTION

Even without the PTO choosing to provide examples of "IDS horror stories" at 63 Fed. Reg. 53512, many patent practitioners have been aware of the burden being placed on the PTO by certain members of our profession. We have seen several patents issued with 2, 3, or even more pages of entries under the "References Cited" heading.

Many (if not most) practitioners understand and applaud the PTO's desire to fulfill its Patent Business Goals, including the desire to reduce its "cycle time" - that type of objective also is beneficial to us and to our clients. However, compromising the integrity of the examination process in favor of an arbitrary time goal should not and cannot be tolerated. We fear that the changes suggested in Topics 9 and 10 would fundamentally alter the process of examination and compromise the examination process by unduly burdening applicants and their representatives.

(NOTE: The undersigned represent a single corporate client. Accordingly, the comments which follow come from the perspective of in-house counsel.)

SOME BACKGROUND

At 63 Fed. Reg. 53512, the PTO summarizes Rules 56, 97, and 98 as well as certain sections from chapter 2000 of the MPEP. However, we note that the PTO's summary is not comprehensive.

For example, MPEP 2001.04 includes the following comment: "The Office does not anticipate any significant change in the quantity of information cited to the Office. Presumably, applicants will continue to submit information for consideration by the Office in applications rather than making and relying on their own determinations of materiality. An incentive remains to submit the information to the Office because it will result in a strengthened patent and will avoid later questions of materiality and intent to deceive. In addition, the new rules will actually facilitate the filing of information since the burden of submitting information to the Office has been reduced by eliminating, in most cases, the requirement for a concise statement of the relevance of each item of information listed in an information disclosure statement." Hmmm . . . this paragraph, written at least as early as January 1995, appears to come from a completely different agency than the one which drafted Topics 9 and 10 in the fall of 1998.

Also, the quotation from MPEP 2004 is relevant and pertinent - someone else (read, an opponent in litigation) almost always sees the question of materiality differently from an applicant or practitioner, especially with the benefit of several years of hindsight. However, the PTO's statement of concern doesn't go far enough. In addition to trying to comply with the PTO's regulations, conscientious practitioners attempt to conform their practices to relevant case law such as, for example, Baxter Int'l Inc., v. McGaw Inc., 47 USPQ2d 1225. In that case, the Federal Circuit ruled that an omitted element - no matter how important that missing element might be to the issue of patentability - is NOT dispositive of the issue of materiality. Such rulings make non-citation of references very dangerous and unadvisable.

Further, Rule 56(b) defines material information as including that which, by itself or in combination with other information, establishes a prima facie case of unpatentability. Even if the applicant or practitioner is in possession of evidence which would rebut the prima facie case (e.g., notebook entries which would support the submission of a Rule 131 affidavit), the "material information" still must be cited because of the manner in which Rule 56(b) is written.

The foregoing paragraphs show just a few of the thorny issues practitioners already face when it comes to the submission of information to the PTO. Of course, we would like to see FEWER of such issues; however, we fear that the "remedies" proposed by the PTO would do nothing to alleviate such issues and, in fact, would CREATE a multitude of new concerns.

THE PTO's DUTY

Patents are legal instruments from the federal government which provide exclusive rights for a limited period of time to those who make and properly disclose new and useful articles, processes, etc. In exchange for disclosing the invention, the federal government gives the inventor the right to exclude others from making, using, selling, etc. This is elementary and fundamental.

An inventor satisfies his end of the bargain by submitting a proper application for patent and, in view of Rule 56, disclosing whatever material information of which he/she is aware. The quid pro quo involves the federal government examining that application for patent and, if satisfactory, issuing a patent. See, e.g., 35 U.S.C. 131 and 151.

Fundamental to that examination process is an investigation of the prior art by the examiner. 37 C.F.R. 1.104(a)(1) reads as follows:

"[T]he examiner shall make a thorough study [of the application] and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention." Art searching by the examiner is mandatory and essential to the proper functioning of the process. Regardless of whether or not a reference is brought to an examiner's attention by an applicant, that reference can and should be found during the search portion of the examination process; otherwise, the examiner's investigation was not "thorough" in accordance with existing PTO regulations. This mandatory, essential element of the examination process must not in any manner be sacrificed for the supposed virtues of efficiency and speed.

PROPOSED "SOLUTIONS" TO PERCEIVED PROBLEMS

Like many agencies, the PTO apparently has decided the solution to "problems" with the response to existing regulations by those being regulated is the creation of more (and more burdensome) regulations. The proposals included in Topic 9 exemplify this more-is-better mindset. Instead, the PTO should take the "reinventing government" initiative to heart and should simplify the burden on both itself and applicants.

Proposal I of Topic 9, relating to a statement of personal review, runs completely counter to the existing state of information disclosure statements and puts an unfair burden on applicants. Rule 97(h) states that information included in an IDS is not admitted to be material to patentability. Now, however, the PTO wants the person submitting an IDS to admit, ON THE RECORD, that the information being submitted is "relevant to the claimed invention(s)." If something to be submitted to the PTO (perhaps just so that the applicant/patentee can later avoid an inequitable conduct charge in litigation) must be accompanied by an admission of relevance to the invention, that admission will be used by opponents in litigation to estop the patentee from arguing non-materiality. Even if "relevance" is carefully defined so as to not run counter to the provisions of Rule 97(h), patentees will be subjected to immense litigation expenses for several years to come until case law precedents interpret this ill-conceived "solution" proposed by the PTO.

Proposal II of Topic 9, relating to copies of other pending applications, is curious since the PTO already is the repository of those applications. We assume that the PTO sometimes has trouble tracking down files which might be in other examining groups. Perhaps, instead of REQUIRING copies be mailed, the PTO should reserve the right to request copies from the applicant should the files in question not be easily available.

Proposal III of Topic 9, relating to unique descriptions, is BY FAR the worst of the three proposals included in Topic 9. The reason for its insidiousness is that it fundamentally alters the roles of the parties primarily involved in the patent application process. Instead of applicants applying and examiners examining, this proposal would place a large portion of the examining burden on applicants. Specifically, applicants would be required to apply each reference (and combination of references?) against their own claims, i.e., to examine the application - statements which would be prime fodder for opponents in litigation. We will not even attempt to describe the MULTITUDE of pitfalls which await applicants forced to try to comply with the maze of regulations and suggestions on how to meet the requirements of the Proposal. Instead, we limit our comments to the point of greatest concern - in the name of efficiency and speed, the PTO is suggesting that the balance of patent application and examination responsibilities be changed fundamentally. At the same time, the PTO will reduce the number of applications being filed because practitioners will be required to spend significant amounts of time drafting "relevance summaries". (Initial calculations within our office indicate at least a 10% lessening in the number of applications we would be able to file because of the increased burden of this rule.)

In the process of altering the fundamental roles of the patenting process, Proposal III puts attorneys in a particularly untenable position. Requiring comment as to how a reference applies to specific claims is in direct conflict with a basic tenet of our system of jurisprudence. To require an applicant's attorney to play any role in the examination of the applicant's application frustrates the zealous representation of the applicant-client. In NO OTHER AREA OF LAW of which we are aware is an attorney required to represent both sides at the same time. To have to do so before the PTO is a requirement different in kind from those imposed on attorneys practicing in any other area of the law. Such a requirement is in conflict with the ethical standards under which we as attorneys practice and imposes an untenable conflict of interest. Any examination assistance the attorney gives (in addition to providing a reference document to the PTO) is assistance in direct conflict with the required zealous representation of clients.

Topic 10 relates to the situation where an applicant - even one who has fully complied with the insidious mandates of Topic 9's Proposal III - can have an IDS refused merely because he/she did too good of a job. By performing an extremely thorough search and properly describing the "relevant" references found, an applicant runs the risk of having entry of his/her work refused by the PTO. This sounds like an Orwellian result.

ANOTHER APPROACH

If we have read the PTO's description correctly, we do not think it improper to frame the problem as one of "overcompliance". In an attempt to assure that all material information known to those involved in the prosecution of an application, those people are erring on the side of caution and supplying not just "material" references but also anything that could be perceived as even "relevant". That is an understandable mindset, especially in view of the manner in which litigation opponent attempt to frame even innocent behavior.

At the same time, keep in mind that examiners are charged with performing a thorough search of the prior art. In most applications, this involves looking at several subclasses, each of which contains scores or hundreds of patents. In other words, examiners allegedly are looking at hundreds of references already.

From the foregoing, we draw two conclusions: (1) the problem-to-be-solved involves the dumping of non-material pieces of information on the PTO, and (2) examiners already are reviewing classes and subclasses in which a large number of those non-material pieces of information can be found.

If these conclusions are correct, a more rational solution would seem to be to eliminate Rule 56 duties with respect to published materials or, at a minimum, U.S. patents. While still requiring applicants to supply known information about most anticipation issues - prior uses by others, public use, on-sale bars, derivation, etc. - such a modified Rule 56 would eliminate the problem of an abundance of published references being dumped on examiners so that they are "washed" should litigation of the resulting patent ever be necessary.

The obvious argument in opposition to this type of solution is that some applications will issue as patents improperly because applicants will intentionally "sit" on known published references. Several potential countermeasures are available, however. The Europeans, Japanese, Australians, etc., of course have adopted an opposition proceeding so that opponents can bring such hidden publications to the attention of the examining authority.

However, even in the absence of opposition or other similar proceeding, conscientious applicants and practitioners will STILL provide the PTO with those references they believe are most relevant. This is true because such applicants and practitioners will wish to get the best possible examination for the fees being paid. By removing the specter of Rule 56 violations, however, such submissions will be made judiciously and reasonably rather than reflexively out of sense of extreme caution.

Another, less desirable option would involve requiring applicants to

pay a set fee (e.g., $10/reference) for each reference beyond a fixed number which he/she wishes the PTO to consider. Such fees should go directly to the hiring of new examiners, professional searchers, or both. Although this proposed solution might not directly help the PTO meet its stated Business Goal, we do not wish to see proper examination sacrificed on the altar of efficiency.

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topic 12, relating to the certain amendments and responses

Attention: Randall L. Green

 

 

We do not disagree with the general principle that fees imposed should reflects costs incurred. Accordingly, we do not stand opposed to most of the proposals included in this topic. We do wish to add one caveat, however.

Where a continued prosecution application (CPA) is filed by fax, we do not see where a burden is imposed if an amendment follows, likely also by fax, within a relatively short time frame. This is especially true where the CPA transmittal letter is accompanied by a communication informing the examiner that an amendment will follow shortly. The PTO file already is in the examining group and remains there. The examiner is aware that the applicant wishes to submit further arguments and thus will not issue a premature rejection. The applicant is responding in a timely manner, probably in a fashion that advances prosecution. In such instances, imposing an additional fee seems unfair and irrational.

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

 

 

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topic 13, relating to amendment procedures

Attention: Joseph A. Narcavage

 

 

We do not oppose the PTO's proposal as long as it interpreted and enforced with some latitude, especially until practitioners become more familiar with the new requirements.

 

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

 

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topic 14, relating to presumptive elections

Attention: Robert W. Bahr

 

 

We strongly oppose any change to restriction/election practice that swings the pendulum of power even more in favor of the PTO. Restriction/election abuses by examiners already are rampant, particularly in chemical cases, and should not be abetted by providing for presumptive elections.

We point specifically to situations where a blend and an article made from the blend are presented in the same application. In such situations, the blend claims likely are presented first and the article claims, which might be dependent from the blend, are presented second. Often, examiners misuse MPEP 806.04(b) intermediate-final product (i.e., by ignoring the species under a genus requirement) and restrict such claims. Because of the primary business of our corporate client, we most often prefer to have the article claims examined first. Allowing a presumptive election would result in the blend claims being examined first, contrary to the best interests of our client. This is wrong and should not be permitted.

The PTO's recent policy on rejoinder is applauded, and its continuation is encouraged.

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

 

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topic 18, relating to alternative review procedures

Attention: Robert W. Bahr

 

 

The proposals in this topic appear too limited to provide much actual benefit, but any pre-appeal is better than the situation existing presently. We are willing to allow the PTO time to see whether it can make viable and practical the procedures proposed.

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

 

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topic 19, relating to issue fee payments

Attention: John F. Gonzales

 

 

This proposal appears to be beneficial to both the PTO and applicants, and we encourage its adoption.

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

Comments on "Advance Notice of Proposed Rulemaking", published at 63 Fed. Reg. 53498 (October 5, 1998)

Topic 21, relating to a forms review program

Attention: Fred A. Silverberg

 

 

We encourage the adoption of such a program and trust that the PTO will set the fees imposed for the service no higher than necessary to cover its administrative costs.

 

 

Submitted by David G. Burleson (Reg. No. 38,090) on behalf of himself and the following other attorneys:

Thomas C. Lagaly (Reg. No. 34,652)

Rupert B. Hurley, Jr. (Reg. No. 29,313)

Mark B. Quatt (Reg. No. 30,484)

John J. Wasatonic (Reg. No. 29,984)

 

 

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